891 F.3d 1003
Fed. Cir.2018Background
- Zeroclick sued Apple alleging infringement of claims 2 and 52 of U.S. Patent No. 7,818,691 and claim 19 of U.S. Patent No. 8,549,443, which concern GUI changes allowing pointer/touch movements to trigger functions without clicks.
- Claims at issue describe a two-step pointer movement method and user interface code that detects finger movements and determines operations; the ’443 patent is a continuation of the ’691 patent.
- At claim construction, the district court held the disputed claim language (e.g., “program that can operate the movement of the pointer” and “user interface code being configured to detect…”) invoked 35 U.S.C. § 112, para. 6 (means-plus-function) and found the claims indefinite for lack of disclosed structure.
- Apple argued the terms were means-plus-function; Zeroclick argued they were ordinary structural terms (conventional program/code) and thus not governed by § 112, para. 6.
- The Federal Circuit vacated and remanded, holding the district court erred by treating the terms as means-plus-function without adequate factual findings or evidence rebutting the presumption against § 112, para. 6.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claim terms invoke § 112, ¶ 6 (means-plus-function) | Terms ("program", "user interface code") are ordinary structural words referring to conventional GUI programs/code, not means | Terms are functional/nonce and thus should be treated as means-plus-function; specification lacks sufficient structure | Presumption against § 112, ¶ 6 was unrebutted; district court erred by treating terms as means-plus-function without evidence; vacated and remanded |
| Whether claims were indefinite for lack of disclosed structure under § 112, ¶ 2 | Claims are definite if not governed by § 112, ¶ 6; specification shows conventional program/code context | If § 112, ¶ 6 applies, specification fails to disclose sufficient structure, making claims indefinite | Court did not reach ultimate indefiniteness holding; remanded because predicate § 112, ¶ 6 determination lacked proper factual support |
Key Cases Cited
- Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (presumption against means-plus-function when term lacks the word "means" and test for rebuttal)
- Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341 (Fed. Cir. 2016) (challenger bears burden to prove § 112, ¶ 6 applies)
- Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996) (terms that are names for structure need reasonably well-understood meaning in the art)
- Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696 (Fed. Cir. 1998) (invocation of § 112, ¶ 6 is a claim-construction inquiry considering intrinsic and relevant extrinsic evidence)
- Cole v. Kimberly-Clark Corp., 102 F.3d 524 (Fed. Cir. 1996) (consult intrinsic/extrinsic evidence/dictionaries to determine whether a term connotes structure)
- Cox Commc’ns, Inc. v. Sprint Commc’n Co., 838 F.3d 1224 (Fed. Cir. 2016) (indefiniteness under § 112, ¶ 2 is a legal conclusion reviewed de novo)